estta tracking number: estta925941...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA925941

Filing date: 10/03/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91224000

Party DefendantTour Management Services, Inc.

CorrespondenceAddress

EDWARD T FENNOFENNO LAW FIRM LLC1459 STUART ENGALS BLVD, SUITE 202MOUNT PLEASANT, SC 29464UNITED [email protected], [email protected], [email protected]

Submission Testimony For Defendant

Filer's Name Robert M. Hadden

Filer's email [email protected], [email protected], [email protected]

Signature /Robert M. Hadden/

Date 10/03/2018

Attachments FL LI TOU001-2 1049 Notice of Filing Testimony - Robert Scribner.pdf(14998bytes )TOU001-2 Declaration of Robert Scribner - PUBLIC.pdf(793395 bytes )

http://estta.uspto.gov

FL/LI/TOU001-2/1049 - 1 -



SPIRITLINE CRUISES, LLC,

Opposer,

v.

TOUR MANAGEMENT

SERVICES, INC.,

Applicant.

Opposition No. 91224000

Mark: CHARLESTON HARBOR TOURS

Serial No.: 86334681

Published in the Official Gazette 05/26/2015

NOTICE OF FILING TESTIMONY

In accordance with TBMP 703.01 and 37 CFR § 2.125(a), Applicant Tour Management

Services, Inc. hereby notes its filing of the testimony declaration of Robert Scribner with

attendant Exhibits A through F. Pursuant to the Protective Order in place and 37 CFR §

2.126(c), portions of this testimony declaration and Exhibits A, B, C, D and E are Confidential;

thus, they have been redacted and shall be submitted under separate cover and identified as

“CONFIDENTIAL” via the ESTTA filing system.

Respectfully submitted,

FENNO LAW FIRM, LLC

/Robert M. Hadden/

Robert M. Hadden

Edward T. Fenno

P.O. Box 20220

Charleston, SC 29413

Phone: (843) 720-3747

Fax: (843) 614-5093

Email: [email protected]

[email protected]

ATTORNEYS FOR APPLICANT TOUR

MANAGEMENT SERVICES, INC.

Date: October 3, 2018

mailto:[email protected]

mailto:[email protected]

FL/LI/TOU001-2/1049 - 2 -

NOTICE OF FILING TESTIMONY

Page 2

CERTIFICATE OF SERVICE

I hereby certify that a true copy of the foregoing NOTICE OF FILING TESTIMONY of Robert

Scribner was served on counsel for Opposer, this the 3rd day of October, 2018 by sending the

same by e-mail and first class mail, postage prepaid, to:

Philip Summa ([email protected])

Rebeca Harasimowicz ([email protected])

PARSONS SUMMA

15801 Brixham Hill Avenue, Suite 550

Charlotte, North Carolina 28277

/Robert M. Hadden/

Robert M. Hadden

FL/LI/TOU001-2/1048_8 - 1 -



SPIRITLINE CRUISES, LLC,

Opposer,

v.

TOUR MANAGEMENT

SERVICES, INC.,

Applicant.

Opposition No. 91224000

Mark: CHARLESTON HARBOR TOURS

Serial No.: 86334681

DECLARATION OF ROBERT SCRIBNER

I, Robert Scribner, pursuant to 28 U.S.C. § 1746, declare as follows:

1. I am managing member of The Kent Group, LLC and president of Tour Management

Services, Inc. (“Applicant”).

2. I have personal knowledge of the matters contained in this Affidavit unless alleged on

information and belief.

3. I am a custodian of the records of Applicant kept in the regular course of Applicant’s

business activities. It is the regular practice of Applicant to maintain its business records, and the records/

exhibits attached to this Declaration were made at or near the dates referenced below.

4. On February 26, 2003, The Kent Group LLC, purchased and was assigned the assets of

Charleston Harbor Tours, LLC, including all rights to the mark CHARLESTON HARBOR TOURS (the

“Mark”) and signs/banners, posters, prints, letterhead and advertising materials bearing the Mark.

Attached as Exhibit A (TOU00596-601) hereto is a true and correct copy of the Bill of Sale and

Assignment recording that transfer.

5. Immediately after that assignment, The Kent Group, LLC began using the Mark in

connection with the following services: arranging of travel tours and cruises; boat transport; conducting

boat charters; conducting power boat charters; conducting sightseeing travel tours by boat; conducting

FL/LI/TOU001-2/1048_8 - 2 -

sightseeing travel tours for others; travel tour conducting; travel tour guide services; and yacht and boat

charter services (collectively, the “Services”). Specifically, The Kent Group, LLC was advertising,

selling tickets, and displaying banners/signage – all under the Mark – prior to March 1, 2003.

6. On December 10, 2010, The Kent Group, LLC assigned all of its assets and rights to the

Mark to Applicant effective in the tax year 2011. Attached as Exhibit B (TOU00710) hereto is a true and

correct copy of the Assignment recording that transfer.

7. Applicant is known as and does business under the name “Charleston Harbor Tours.”

8. From January 1, 2011 through the present, Applicant has used the Mark (CHARLESTON

HARBOR TOURS) in connection with the Services.

9. The Kent Group, LLC and Applicant extensively used and promoted the Mark in

hundreds, if not thousands, of advertisements and marketing materials between 2003 and the present.

Applicant has produced more than 250 examples showing how it has used the Mark during discovery in

this matter. Attached as Exhibit C hereto are true and accurate copies of many of the documents

referenced above in this paragraph.

10. From 2003 through 2015, The Kent Group, LLC and/or Applicant extensively used and

promoted the Mark in or through at least the following publications, websites, broadcasts or other

marketing materials which were visible or available to consumers:

1) 101 Things to Do;

2) ABC News 4 / WCIV TV;

3) Rack cards and brochures;

4) Apex Broadcasting;

5) Best Read Guide;

6) Big Fat Coupon Book;

7) Bing;

8) Borrowed & Blue;

FL/LI/TOU001-2/1048_8 - 3 -

9) Canadian Auto Association;

10) Charleston City Paper;

11) Charleston Classic;

12) CharlestonHarborTours.com;

13) Charleston Hotel and Resort Television;

14) Charleston Hoteliers Network;

15) Charleston Regional Business Journal;

16) Charleston Riverdogs;

17) Charleston Style and Design;

18) Charleston Weddings Magazine;

19) Charleston Area Convention and Visitors Bureau, including the CVB Meeting Planning

Guide, Official Visitors’ Guide, website, and Wedding Guide;

20) Discover Charleston;

21) Discovery Map;

22) Evolve Productions;

23) Facebook;

24) Florida Motor Association;

25) Fox 24 Television;

26) Gateway Magazine;

27) Google;

28) Goose Creek Football;

29) iHeartMedia;

30) Intown.com;

31) Hotel Guest Directory;

32) Key to Charleston Magazine;

FL/LI/TOU001-2/1048_8 - 4 -

33) King Street Marketing Group;

34) Little Black Book;

35) LM Communication Bridge 105.5 Radio;

36) Lowcountry Sun;

37) Monster Marketing;

38) My TV Charleston WCIV;

39) Myrtle Beach Area Chamber / CVB;

40) Myrtle Beach Guide;

41) MyWedding.com;

42) North Myrtle Beach Chamber;

43) Official Guides;

44) Pawley’s Island Realty;

45) Professional Printers;

46) Race to Savings;

47) Race Week;

48) Rainbow Row Cards;

49) Signage (Sign Design);

50) South Carolina BnB Directory;

51) Skirt! & Where Magazines;

52) Southeast Publications – Map Guide;

53) Strand Media Gateway Map and Magazine;

54) Tourist Pak;

55) Traveler Magazine and Map;

56) Traveler of Charleston Mobile Application;

57) TravelerofCharleston.com

FL/LI/TOU001-2/1048_8 - 5 -

58) Applicant’s uniforms for employees;

59) Waccamaw Publishers;

60) Wedding Pages at TheKnot.com;

61) Weddingwire.com;

62) Weddings Unveiled;

63) Weddings With Style;

64) Welcome to Charleston;

65) Write Stuff Communications / Big Fly;

66) Wonderful Wedding;

67) Yelp.com; and

68) Zvents.

11. In 2016, I prepared a summary of Applicant’s and The Kent Group, LLC’s advertising expenditures

and sales in connection with the Mark from 2003 through 2015. Attached as Exhibit D

(TOU00604) hereto is a true and correct copy of that summary.

12. In late January 2017, Drew Yochum (Director of Sales and Marketing for Applicant) and I prepared

an updated and more detailed summary estimating advertising and marketing expenditures in

connection with the Mark from 2010 through 2015 based on Quickbooks reports that we generated

at that time. We also included in that summary our estimate of consumer impressions for those

advertisements and marketing efforts based on our knowledge of the publications and information

provided by the publishers. Attached as Exhibit E (TOU00711) hereto is a true and correct copy of

that summary.

13. Based on my review of The Kent Group, LLC’s accounting business records, its estimated

expenditures in promoting the Mark from 2003 to 2010 were approximately:

1) [REDACTED] in 2003;


FL/LI/TOU001-2/1048_8 - 6 -

3) [REDACTED] in 2005

4) [REDACTED]in 2006;



7) [REDACTED] in 2009; and

8) [REDACTED] in 2010.

14. Based on my review of Applicant’s accounting business records, Applicant’s estimated

expenditures in promoting the Mark from 2011 to 2015 were approximately:






15. Based on information provided by various marketing/advertising sources and Applicant’s own

experience, consumer impressions created by the above expenditures from 2010 to 2015, not

including visits to Applicant’s website at CharlestonHarborTours.com, were approximately:







16. Based on my review of The Kent Group, LLC’s accounting business records, its gross sales in

connection with the Mark from 2003 to 2010 were approximately:


FL/LI/TOU001-2/1048_8 - 7 -








17. Based on my review of Applicant’s accounting business records, its gross sales in connection

with the Mark from 2011 to 2015 were approximately:






18. Applicant provides services under the Mark to an average of approximately 9,000 passengers each

month during peak tourist season.

19. As part of my job in the tourism industry in Charleston, I am familiar with Opposer in this action,

Spiritline Cruises. On information and belief, Opposer operates Fort Sumter Tours, which offers a

boat trip to Fort Sumter. Up until the time that Applicant’s trademark application for the Mark was

filed, I do not recall ever seeing or hearing Opposer use the term “Charleston Harbor Tours” to

advertise or promote any of its products or services. After Applicant filed its application to register

a trademark in “Charleston Harbor Tours,” however, I observed that Opposer began to make regular

use of the phrase “Charleston Harbor Tours” on its website, apparently in order to attempt to block

Applicant’s registration of the Mark. Notwithstanding Opposer’s recent efforts, however, I have

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still never heard a tourist or anyone else besides Opposer use the phrase “Charleston Harbor Tours”

to describe Opposer’s products or services.

20. Applicant offers daily harbor tours under the Mark on the Carolina Belle, a 300-passenger vessel.

The Carolina Belle conducts between 2 and 5 tours daily, except in January and early February.

21. In addition to daily tours, Applicant also offers charters and special events under the Mark on

the Carolina Belle (which can accommodate up to 250 passengers in a charter configuration) and

the Carolina Queen, a 400-passenger vessel.

22. As part of my job in the tourism industry in Charleston, I am familiar with many other boat

companies that operate in or near Charleston. Among them, AquaSafaris has a 100-passenger

catamaran sailboat and offers private charters and special events. Sandlapper Water Tours

advertises that it provides nature tours, ghost tours, sunset cruises, history tours, and private charters

on a 49-passenger catamaran. Geechee Girl Charters advertises that it provides private charters,

parties and special events on a 6-passenger boat.

23. I was not familiar with Charleston Fun Fishing prior to my deposition in this matter on November

9, 2016. Since that time I have visited the website at charlestonfunfishing.com and it appears that

they offer services under the mark YATES SEA CHARTERS. Yates Sea Charters advertises

offshore fishing charters and custom tours on 6-passenger (or less) vessels.

24. I was not familiar with Charleston Paddle Board Co. prior to my deposition in this matter on

November 9, 2016. Since that time I have visited their website at charlestonpaddleboardco.com

and was unable to find any use of that phrase or of “CHARLESTON HARBOR TOURS,” – only

the phrase “Harbor Tour.” Charleston Paddle Board Co. advertises that it offers stand up paddle

board rentals, lessons and excursions.

25. Based on the advertised sizes of their boats, the number of tours offered and/or whether they focus

on charters rather than scheduled tours, the companies discussed above and the other companies

discussed in the materials produced by Opposer in this action provide services to a significantly

FL/LI/TOU001-2/1048_8 - 9 -

smaller number of consumers than Applicant. Accordingly, I don’t consider many (if any) of them

to be competitors of Applicant besides Opposer. In addition, if they have used the Mark at all, their

use has been no more than inconsequential.

26. Furthermore, the companies discussed above do not all compete with Applicant’s services, because

upon information and belief, the consumer who is interested in activities such as paddling around

the Charleston waterways on a stand-up paddleboard excursion is not necessarily the same

consumer who is interested in taking a primarily historically-themed tour on a large boat. Similarly,

upon information and belief, those looking to charter a 300-400 person vessel are not the same

market sector as consumers looking to charter an 8-10 person vessel.

27. Based on my research, there are at least 70 different water-based charter or tour service companies

in the Charleston area, and possibly as many as 100.

28. Based upon my knowledge of the water-based charter or tour services industry in Charleston,

Applicant and Opposer are the two largest such companies by a significant margin.

29. The coupon attached to Opposer’s Motion for Summary Judgment and identified as TOU00012

was distributed by Bubba Gump Shrimp Co. as part of a cross-promotion that The Kent Group,

LLC did with that restaurant in 2007. To the best of my recollection, The Kent Group, LLC was

only involved in that cross-promotion during 2007, and this is confirmed by the coupon itself which

reflects that it expired on November 25, 2007. Attached as Exhibit F hereto is a true and accurate

copy of this cross-promotion referenced in this paragraph.

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